30 October, 2013

Patent trolls (often referred to as Patent Assertion Entities), the creatures that live underneath the bridge of innovation and profit, attempting to benefit from those who wish to use their patents, all the while never actually using the patents they own. Even if their appearance rarely matches those of the fairy tale variety, patent trolls are a big problem in the modern sphere of innovation and creation. Currently patent trolls take up a whopping 62% of all patent infringement claims; having gone up from a still high figure of 29% only two years ago. This can be acknowledged is a problem, and calls have been made to address this issue. Finally the first step has been taken in doing so.

In the United States a Bill was recently introduced called the Goodlatte Innovation Act, which seeks to remedy the changes introduced in the America Invents Act in 2011. According to the Bill's creator, Bob Goodlatte, the Act "...is designed to eliminate the abuses of our patent system, discourage frivolous patent litigation and keep U.S. patent laws up to date. These important actions will help fuel the engine of American innovation and creativity, creating new jobs and growing our economy".

The CEO of Patent Trolls Inc.

The measures the new Act takes is the introduction of the requirement to present information very early on in litigation, essentially justifying the infringement action. The action would then be assessed and should it not be deemed "substantially justified", the alleged infringing party would not have to pay the award sought by the plaintiff. The Act also introduces more stringent disclosure requirements, making the plaintiff submit more detailed information as to the patent being infringed, which specific claim of that patent is infringed, and how it is being infringed by the defendant. This clearly opens up the process and makes it more transparent for both sides, potentially impacting on vague threats over infringement resulting in quick settlements out of fear; exactly what patent trolls are seeking in their mode of operation.

The Act also introduces joinder provisions which link any parties with a "financial interest" in the patent case, clearly targeting shell companies which are used for infringement claims in lieu of the controlling company. This would make the parent companies liable for any fees which would result in frivolous claims, preventing them from side-stepping them while still benefiting from any awards that could be won by the shell company in their claim. In addition it introduces an exception for any infringements that might occur in consumer use or through manufacturers' use of the patent. The court would have the ability to stay those proceedings until the matter between the main companies is settled.

The Innovation Act is clearly something which the patent sphere has been yearning for in the US for the last couple of years, and with the aforementioned figures proving a clear direction in the abuse of patents through infringement claims, those actions need to be curbed. Although the Bill is a bipartisan creation, due to the divide in the current US government the Bill's passing is still in the air; however one could argue its passage is in the interest of both sides and the industry as a whole. Whether the Bill passes or any changes are made will be monitored by this vigilant writer, and I argue this Bill is an incredibly welcome change to the grand scheme of things.

26 October, 2013

The name of a product can often be an incredibly strong identifier of a certain type of goods. Think of Aspirin, Cellophane, Yo-Yo, Escalator or even Heroin, and you automatically associate them with a particular type of good as opposed to a particular brand of goods. This is called the genericization of a trademark; where the trademark has become so ubiquitous of a type of good it loses its distinctiveness towards a particular brand of goods.

A pillow you can sleep on AND eat

A case which illustrated the genericization of a trademark was the case of Kellogg Co v National Biscuit Company. The case dealt with the sale of a product many are even familiar with today called 'Shredded Wheat' For the uninitiated, this product is a breakfast cereal consisting of pillow-shaped wheat shreds, which was made by both companies. The product was initially made by a company called the Natural Food Company (which underwent a name change to the Shredded Wheat Company later on) since the early 1900s, which was subsequently bought by National Biscuit Company in 1930. The Kellogg's Company had made their own variant of Shredded Wheat since the late 1920s, although they had a similar product produced before that time. The National Biscuit Company subsequently sued Kellogg's for unfair competition for the use of the name 'Shredded Wheat' due to them producing a similar product and using the same name for that product.

In the case there were two considerations that the Federal Court of Delware had to decide on; one relating to the patent of the manufacture of the products, and the aspect of the use of the name. For our consideration the latter part is of more interest, however the patent does affect this particular point to an extent.

In the Court's decision they saw that the National Biscuit Company had no exclusive right to use the term 'Shredded Wheat' in selling their product. According to the Court the term is merely a descriptive one of a pillow-shaped wheat cereal, and the public recognize the name as an identifier of such products, due to Kellogg's ability to make the product (as the patent for the manufacturing method had expired in late 1912). The product had been sold since the late 1890s under the name of 'Shredded Wheat', and the term had not been trademarked until it was attempted to be trademarked by the Natural Food Company in 1905 - which was subsequently refused.

What makes this case peculiar is the inclusion of the name 'Shredded Wheat' as part and parcel of the patent for its manufacture. As the patent for the product's manufacture had gone into the public domain upon its expiry, so had the term which had been used to identify products which were manufactured in that particular way. According to the Court:

"It equally follows from the cessation of the monopoly and the falling of the patented device into the domain of things public that along with the public ownership of the device there must also necessarily pass to the public the generic designation of the thing which has arisen during the monopoly... To say otherwise would be to hold that, although the public had acquired the device covered by the patent, yet the owner of the patent or the manufacturer of the patented thing had retained the designated name which was essentially necessary to vest the public with the full enjoyment of that which had become theirs by the disappearance of the monopoly."

Eating breakfast can be complicated

In other words, the term 'Shredded Wheat' had become generic in the description of pillow-shaped wheat cereal products, and therefore could be used by anyone wishing to make and sell those products. Kellogg's had to merely distinguish its products from the plaintiffs so as to avoid any confusion, and through which a potential action in passing off. This was done through a distinctive look of the Kellogg's box, which did not resemble the one used by the National Biscuit Company, and the actual product differed both in size and appearance slightly from those made by the plaintiff.

The genericization of trademarks is a complex analysis of both the goodwill of the product in question (its reputation and imagine in the mind of the consumer) and other potential factors. It can be argued that even though the Court saw that the patent contained the use of the term 'Shredded Wheat', this would not be the case today. Arguably the use of the same term by Kellogg's could be an act of passing off the product, regardless of the manufacturing methods employed, as the plaintiff had been selling the product for over 20 years prior to Kellogg's adopting the name for its product. The plaintiff's inability to register the trademark would go against their action; however the motives of Kellogg's in the use of the name can be questioned.

22 October, 2013

The line between what is 'good' and what is 'bad' is often a very fine one, especially when dealing with humans and human development. The question of when is a fetus a 'person' is one which treads an area often incredibly contentious to some, evoking strong feelings about the sanctity of human life or when a human actually is 'human'. From a lawyer's perspective morals are a thing we're meant to avoid and exclude in our considerations - or in other words; morals have no place in the law. This applies to intellectual property as well, with similar considerations having been discussed on this blog, but a recent turn of events have presented patents with yet another conundrum.

A patent which was recently awarded to 23andMe, a company which deals with genetic testing whose proclaimed mission is to be "...the world's trusted source of personal genetic information", deals with the potential to identify certain characteristics (specifically phenotypes) in sperm and the female egg (if picked from a pool of donated ones for example) and then selecting the ones which will have the higher likelihood of producing the desired characteristics in the subsequent baby. To put into more specific terms: "[t]he recipient is allowed to make a specification of one or more phenotypes of interest in the hypothetical offspring". Traits which can be selected include height, eye color, personality characteristics and potential disease risks.

Little Ethan had no idea he'd been "selected"

As can be seen from the basic description of the patent, this has caused quite the uproar, with people calling the potential selection of babies' traits "unethical" and "treacherous", and understandably so. But one has to pose the question, as so aptly pointed out in the title of this article, do morals play a part in patents? This question, as can be guessed, does not have a straightforward answer.

The US patent legislation does not have an explicit provision for the rejection of patents that contravene 'morals' of any kind, leaving the possibility open for patents such as this, which might skirt the realm of moral objection, to be granted. The European view of this is slightly different, as the European Patent Convention dictates that patents cannot be granted for inventions "...which would be contrary to "ordre public" or morality". This has been adopted in the UK under the Patents Act 1977. What this moral standard is is something that would have to be assessed in each separate instance, as the Convention does not define this in itself. In Australia and Canada there is no morality requirement, much like the US. Even so, in the US decision of Lowell v Lewis, the courts saw that under the requirement of 'utility' (used in both the US and Canada) patentable "...invention[s] should not be frivolous or injurious to the well-being, good policy, or sound morals of society". Whether the selection of babies' potential traits would fall under this remains an unanswered question.

Some 15 years ago a patent application was made for combining non-embryonic cells and human cells in the creation of a "humanoid chimera", which was subsequently rejected by the US Patent Office on the grounds that "...inventions directed to human/non-human chimera could, under certain circumstances, not be patentable because, among other things, they would fail to meet the public policy and morality aspects of the utility requirement". Following the USPTO's reasoning here the selection of human traits could be considered immoral; however it needs to be noted that the combination of human cells and non-embryonic cells is far from the selection of potential traits in a baby from human reproductive cells. Since the aforementioned "chimera" patent was filed and rejected, there has been no action on the American legislature to deal with this issue.

Bebop and Rocksteady don't really comprehend chimeras and patents

There is no definitive answer to questions such as whether patents like the one which was granted to 23andMe should be allowed, and they do present a conundrum for people and medical professionals. Being able to at least influence the health and traits of your future offspring could yield a generation of babies with a much lower risk of hereditary disease or other health related issues. On the other hand it could open the avenue for selection leading to the discrimination of certain 'undesired' traits. Keeping the latter point in mind, how much further would genetic selection go from a normal selection for a mate to reproduce with? After all, we all pick our mates based on physical traits (and other traits subconsciously), at least initially, which do influence the traits of the subsequent baby. If a person sees certain traits in another to be undesirable, they will simply not reproduce with them. In this humble writer's opinion the law would have to be very wary with the overt restriction of subject matters that pertain to morals. This is a concept so subjective that the judiciary would have a hard time deciding on issues which do not have a clear answer as to their morality - what is moral to me could very well be immoral to the person next to me.

As of today 23andMe have not done anything with their patent, but the door is still open for them to develop methods to utilize this patent. Much like the recent genetic patent cases, this will an issue that will have to be challenged if it is utilized, and only then will the judiciary be able to decide whether trait selection is patentable or not. Morals aside, a generation of super kids sounds both intriguing and terrifying at the same time.

18 October, 2013

An essential component of copyright infringement in all of the common law is that the infringement, be it copying or other restricted acts, has to be done in relation to the work as a whole or a 'substantial' part of that work (Australia, UK, and Canada). The former is more than self-explanatory; however the latter has always been an abstract concept, as what can be deemed to be a 'substantial' amount can be anything between 99% of the work or a fraction of it. Due to this ambiguity the duty to define what a 'substantial' amount would be fell on the courts, being settled in the UK courts in the 1930s.

The defining case of what a 'substantial' amount is is Hawkes & Son (London) Ltd v Paramount Film Service Ltd, which concerned the song "Colonel Bogey". The plaintiffs in the case were the owners of the copyright to the song in question, a march written in 1914, often used in military settings. The song was subsequently used by Paramount Film Service in a newsreel of the opening of the new Naval College. The reproduced part of the march lasted for an approximate 20 seconds in the newsreel, with the entire march being roughly 4 minutes long. The incidental inclusion of the song was also considered; however our main focus would be on whether that 20 second snippet from the song could amount to a 'substantial' part of the song, therefore infringing the plaintiff's copyright.

The UK Court of Appeal tackled the matter after it was initially dismissed by Justice Eve at first instance. In the Court of Appeal's view the matter boiled down to assessing the copied material not merely based on quantity, but other factors as well, or as presented by Lord Hanworth MR: "...we must look into the question of degree and what was the nature of the reproduction". Agreeing with Lord Hanworth, Lord Justice Slesser further developed the Court's view on the matter:

"I agree with my Lord that this reproduction is clearly a substantial part of 'Colonel Bogey', looked at from any point of view, whether it be quantity, quality, or occasion. Any one hearing it would know that it was the march... [and] it is clearly, in my view, a substantial, a vital, and an essential part which is there reproduced."

Not that Colonel

Now what can be taken from Lord Slesser's view is that a 'substantial' part of a work can be any amount, not merely a large part of it through a purely quantitative analysis. His Lordship talks about recognition, and although one can argue that this view is a particularly weak one, one can say this would be much akin to what was stated in Harper & Row Publishers v Nation Enterprises; the "heart" of the work. The part which was copied has to be essential and vital to the work as whole, and recognition plays a part in that. For example a very recognizable introduction to a song or a particularly memorable riff in the middle can be a substantial part if deemed sufficiently vital to the work as a whole.

As can clearly be seen what is 'substantial' is purely subjective and assessed by the court according to each instance, not providing a clear-cut rule which applies to all works. What is deemed 'substantial' in each instance will vary depending on the type of work in question, how it has been modified (if at all), and whether it is sufficiently important to the work as a whole. Under modern laws there are exceptions aplenty for a variety of uses, which did not exist under the UK Copyright Act 1911 at the time of the case, but the case still remains an important part of the common law system in copyright infringement.

15 October, 2013

In a time when services like Netflix and Hulu are showing the cable companies what's what through convenience, choice and pricing, one would imagine there would be no need for people to stream content outside of a wide array of services enabling you to watch almost what ever you want, when ever you want. This however, is a reality, and access to content is still tough for some either due to monetary or because of regional restrictions.

A website, Aereo, operates by receiving TV signals and then converting them into a different format, allowing subscribers to watch TV shows on-demand through their service via the Internet for a subscription fee. In this manner, the service is much alike Netflix; however allowing you to watch recently aired shows as opposed to entire seasons once on offer via Netflix. Aereo does allow you to watch live TV as well as programs which have been recorded once they have aired. Two media companies, Hearst Stations and WCVB-TV, objected to this and sued Aereo for copyright infringement.

In a recent ruling, the District Court of Massachusetts had to decide whether Aereo's activities would indeed infringe copyright under section 106; more specifically the ability to perform (i.e. transmit) the copyrighted content publicly. The Court in its assessment had to determine whether the service would be a remote recording service, much akin to a DVR in a home, drawing from the case of Cartoon Network v CSC Holdings (Cablevision), where a remote DVR service was seen to not infringe copyright as the recorded programs was not deemed a 'public performance'.

Some love streaming TV a 'bit' too much

Clearly one can draw also from the US view of fair use, more specifically time shifting, where a viewer can record a show to view on a later date and that act would not infringe copyright. Much like the case of Sony Corporation of America v Universal City Studios, the user selects which programs it would like to record on Aereo, therefore arguably time shifting the content they wish to view. The case at hand however did not touch upon this fact. Hearst was also unable to show irreparable harm resulting from Aereo's service, only citing the possibility of harm through the possible loss of cable subscribers and their bargaining position when dealing with cable companies; an argument which was rejected by Justice Gordon, stating that it would "...take several years to materialize".

The Court did consider other factors, but these remain the most relevant. In concluding the Court saw that Aereo did not infringe copyright through their service, although different courts in the US have seen this to be different. The plaintiffs have since sought the right of appeal from the US Supreme Court, attempting to have them finally decide this issue, due to other services like Aereo having been shut down in New York and California. The Supreme Court, should they choose to take the case on, would have to decide "...whether the performance of their copyrighted programming via Aereo is "public" and therefore prohibited by the copyright law, or if Aereo is engaged in tens of thousands of "private" performances to paying strangers".

11 October, 2013

Colors have always been an interesting area of trademark legislation, and to the layman more often than not, something which proves to be inconceivable. In a world where distinguishing your goods from other similar ones is imperative, and can prove to be a vehicle of imitation if you are not careful (more of which can be read here). In the latter part of 2012, Cadbury successfully had their trademark on the color purple (a variant of the color to be more specific) upheld by the court, in the field of chocolate, which was subsequently appealed by the initial challenging party, Nestle.

On appeal, which was decided earlier this month, the court had a further look at the issue of whether the color purple could be trademarked in this instance. In the Court of Appeal's opinion the Hearing Officer, the initial body responsible for the approval of trademarks in the UK, erred in his decision to allow the color to be registered. More specifically, the error "...stems from the misinterpretation of the verbal description of the graphic representation of the mark for which application is made... i.e. being the predominant colour applied to the whole visible surface".

In the Court of Appeals judgment, the description given by Cadbury "...[when] properly interpreted, does not constitute "a sign" that is "graphically represented" within Article 2 [of the Trade Marks Directive 2008/95/EC of 22 October 2008]. If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the color, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required". Due to the fact that Cadbury had used the word 'predominant' in their description, the description was not sufficiently clear to be accepted as a 'sign' under the UK Trade Marks Act 1994 and the EU Directive. Cadbury used the color purple in a multitude of products, associating other elements with it along with the color purple, thus creating a multitude of variants of that sign, making the sign unclear.

Purple was George's favorite color. No one could've guessed.

To summarize the Court saw that "[t]o allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage". Clearly one can agree with the Court in their decision, as the registration of a color in itself is acceptable; however should it only be an element amongst other elements, it would not be a sign that distinguishes that product by itself. This is highlighted by such cases as Mars Australia Pty Ltd v Société des Produits Nestlé SA, where the color used was clearly the sign used (although the case in question did include other factors, such as the color's creation by Mars) and would distinguish the goods from others.

08 October, 2013

The role of IP laws and the framework it currently resides in has been debated for decades, and with changes looming in both Australia and the UK, this discussion has been further highlighted. In a recent lecture (a transcript of which can be found here) at the University of Melbourne, Dr. Francis Gurry, the Director of WIPO presented his thoughts on the future of IP.

Dr. Gurry's opening statement set the stage for the topic well, presenting the volatile changes intellectual property has gone in recent years: "...the context in which intellectual property operates in the contemporary world is vastly different from that in which IP was born and that new context has changed the position of intellectual property in the economy and it’s changed it in society, and I think it should cause us to rethink the role that we give to intellectual property." This change has manifested in many ways, such as the digitization of media, the emergence of the Internet and recently the Cloud.

The role IP has played was laid out well by Dr. Gurry. According to him IP is both a private good, where information and knowledge serve as a vehicle for personal gain, but they are also a public good in consumption. In the case of the latter, information and knowledge can be enjoyed and used by others without lessening the value of the information or knowledge itself for the producer of it. The current IP framework serves as a way to protect commercial interests by limiting its public consumption, in order to recuperate the costs that were incurred through its creation, or as was incredibly eloquently put by Dr. Gurry: "It thereby creates an economic incentive to investment in knowledge creation and provides a safe passage through hostile terrain for the long and often lonely march of an idea from conception to commercial implementation as a new product, service or process." This aspect is important, as it creates the possibility of the creation of that information or knowledge to begin with, especially in a modern society where basic human needs are only met through the acquisition of money.

IP does provide another interesting benefit, one which most undoubtedly overlook as a result of the heavy emphasis on the commercial aspect of IP. This is the opening up of knowledge, and the ability to build on old information; more specifically relating to patents. Dr. Gurry expanded on this with an example of the patent relating to the saxophone, one which was subsequently built on, used to create something new and to arguably improve the initial patent itself. Contrasting this is the loss of knowledge in how old masters made violins, such as Stradivari and Guarneri, as without any open and accessibly information to their specifics their methods still allude even modern manufacturers. The patent system has also created an amazing database of human invention, both past and present, for future generations to use and study. This availability of information clearly can be argued to counter-balance any commercial interests relating to patents themselves, showcasing the amazing things that proper IP schemes can create.

The status quo aside, Dr. Gurry does point out that "...much has changed in the world... [and the changes] should cause us to add certain other responsibilities to the job description of IP in order to reflect better the position of IP in the contemporary economy and society". This is caused by the ever-growing intangible nature of new IP, a shift in the economic marketplace from the West to the East, and the empowerment of non-State factors through the Internet. These affect how and why companies invest in certain types of IP and how they engage with the information they already own, such as shifting towards a more knowledge-based investment plan, providing a competitive edge, whereas some decades ago physical capital was king. Also the shift from West to East has, for the first time, presented a world where the East is slowly catching up with the West in the production and creation of both information and knowledge. Finally non-State factors play a huge part in the impact that individuals and collectives can have on all types of IP, more notably the denial of SOPA (Stop Online Piracy Act) in the US. How and why new networks impact this framework is new and presents and interesting paradigm of interaction.

So how should this change be addressed in the field of IP? Some geographical and geopolitical issues have to be tackled, according to Dr. Gurry. The impact IP has on any country's economy harbors a culture where countries attempt to attract talent, and even conduct espionage to attain secrets relating to new developments. This culture would have to be addressed before it becomes a problem, potentially through international agreements relating to the acquisition of talent and the limiting of any illicit activities. What IP will encompass, and does currently, might also need addressing. This means that, according to Dr. Gurry, "[t]he boundary between science and technology, or discovery and invention, is more and more difficult to draw, especially for lawyers" - creating uncertainty over what subject matter IP would cover, as shown by the recent battle over gene patents. Dr Gurry also raises some concerns should any given legislature or judiciary overlook the public's opinion in this matter: "If IP, whether through the legislature or the judiciary, takes decisions about 'appropriability' that are not in consonance with the sentiment of the general public, it will lose the social credibility on which all good regulation depends". Some signs of detachment can be noted, especially with some opinions pointing to even the abolishment of the current copyright regime. This can lead to problems in the long-run.

Finally access to IP has to be addressed, where Dr. Gurry points out two competing interests: "For policy-makers, the challenge will be to try to orchestrate an informed and reasonable public debate [over access to IP]. For corporations, the challenge will be to balance being competitive and getting a financial return on investment, on the one hand, with management of a potentially hostile public response, on the other hand". A balance between the two would be incredibly challenging to create, and it would have to periodically be addressed, as one can see from the current imbalance in especially copyright relating to fair dealing for example.

At the end of the lecture Dr. Gurry does leave us with something to think about:

"If you were in the 18th or the early 19th century, new wealth was being created, in new ways and on a rather massive scale, by physical capital and the process of industrialization. Industrialization spawned the great ideological debates and cleavages that shaped the world for the next 200 years – capitalism, Marxism, communism, socialism – and they all centered on property, the control of property and its use by the State and citizens. Now, in the early 21st century, new wealth is being created, in new ways and on a rather massive scale, by intellectual capital and virtualization. This is what we are seeing in what I have described – the contours of the new ideological battle lines that will shape our world for the foreseeable future."

04 October, 2013

Often called the "...less glamorous cousin of other intellectual property regimes", the law protecting designs is overlooked by most as being a less 'sexy' point of discussion among more prevalent copyright and patent legislation. Amongst this one has to note that designs are something that most of us will deal with almost daily, as it pertains to how things look. This simple, yet very important aspect of intellectual property is taken for granted by most, however still much appreciated by those who work in the fashion industry and other fields which heavily rely on distinguishing their goods from others because of their distinctive appearance. Keeping this in mind, what does this regime protect then more specifically?

This matter was tackled in the 1970s case of AMP Inc v Utilux Pty Ltd. The case concerned the Registered Designs Act 1949 in the UK, under which any 'design', as defined as "...features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye", would be capable of being registered. The design which was sought to be registered by AMP was the shape of an electrical terminal for a washing machine, which was used to join electrical wiring. AMP entered into a contract with Hoover to produce such a terminal for them, which was subsequently registered under the Act as a registered design. In taking action against Utilux, AMP's designs validity under the Act was questioned. Could an electrical terminal have 'eye appeal' under the Act, and therefore have been registrable to begin with?

Eye appealing, or just overcompensating?

Evidence was produced as to the similarities of electrical terminals made by others and AMP, all possessing different features and looks while still performing the same essential task. Lord Reid however found similarities amongst the terminals despite their varying styles. In a similar vein, these varying features had to play a part in the consumer's decision over which washing machine to buy in order for it to fall under the Act. Designs are concerned with physical appearances and their enticing nature, not its function.

In his judgment Lord Reid saw that "[f]or a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character". What his Lordship refers to is the eye of the consumer, not merely an aesthetic or artistic eye, further highlighting a need for it to catch the consumer's eye, not just be eye-catching. As the terminal in question was an internal component, it might not be fully visible, if at all, to the consumer, therefore not necessarily falling under the Act.

In the matter the infringer, the party claiming the terminal was not a registered design, would have to prove on a balance of probability that the article would not have greater appeal to any member of the public than an article which did not have that particular design which it possessed. In the case the House of Lords saw that the terminal did not fulfill this requirement, and the defendant had not subsequently infringed on their design rights.

One has to note that even if a design does not fall under a potential registered designs regime, it might still infringe the copyright of the entity in question. Should the design fulfill all the requirement of copyright, there could be an avenue of recourse through this measure. This pertains more to aesthetic elements, such as intricate patterns and such, but does not necessarily exclude other factors.

01 October, 2013

The 1880s were a time of invention, with the creation of a new form of toilet paper, the modern seismograph and one of the most iconic characters of British literature, Sherlock Holmes, all happening in the latter decade of the 19th Century. Without discounting the impact the former two have had on human history, the story of Sherlock Holmes in its many forms has inspired millions of people, spawning countless adaptations and reboots in its lifetime. In this the character of Sherlock Holmes and all the other cast have immense value to the copyright holders, the Arthur Conan Doyle Estate.

The copyright for Sherlock Holmes has already expired in Canada and the United Kingdom, in 1980 and 2000 respectively, but the mastermind of deduction still remains protected in the United States on part of some of Sir Arthur Conan Doyle's pieces till 2023. As such our hero is still held tightly to by its copyright holders in the US, but this has now been challenged.

In a law suit filed in early 2013, Leslie Klinger, a California based lawyer and Sherlockian expert, is challenging whether the character of Sherlock Holmes should be protected by copyright due to most of Sir Arthur Conan Doyle's works having been released into the public domain. The character of Mr. Holmes has been vigorously protected by the Estate, demanding licencing fees for the use of the detective's character and persona, as opposed to the copying of the stories he resides in. According to the Estate "Holmes is a unified literary character that wasn't completely developed until the author laid down his pen", clearly arguing that the character of Mr. Holmes should be protected for as long as there are works on him which are protected, extending the period till 2023 in the US. Under the defense's statement regarding the complexity of Mr. Holmes' character: "Sir Arthur continued creating the characters in the copyrighted Ten Stories, adding significant aspects of each character's background, creating new history about the dynamics of their own relationship, changing Holmes's outlook on the world, and giving him new skills. And Sir Arthur did this in a non-linear way".

A modern day representation of Mr. Holmes' complexity

As has been discussed on this blog, and by other legal authors throughout the decades, copyright protects the author's expression, not merely the ideas represented in the work. What is argued by the Estate, clearly, is that Sherlock Holmes' character is not merely an idea itself, but an intrinsic part of the expression of Sir Arthur Conan Doyle, and should still be protected. As it stands there is no legal precedent dealing with the character of a person in a long-running literary series, so whether protection would be offered remains a mystery for the most part.

According to Mr. Klinger the Estate initially failed to appear in court for the motion for summary judgment by Mr. Klinger, finally filing their opposition in September. Since then the matter has been passed onto Judge Castillo for a final judgment on the matter.

Should a character be protected as a 'complex personality' which has developed over years, even decades, in the span of a cavalcade of literary adventures? Arguably no, as this would mean copyright would extend its grip into the domain of ideas as opposed to expression. The character or personality of any given fictional personality is merely an idea of what that person is, thinks and how they see and understand the world around them. The expression of those personality traits and how they impact the story surrounding the character should be, and has been, protected; however the mere idea of those traits encapsulated in a fictional persona do not merit extended protection in themselves. Whether the court would disagree with me will remain to be seen.

About the Blog

IP Iustitia is a blog that discusses intellectual property law (and associated topics), attempting to decipher IP law for those who engage with it once in their life, on a daily basis and anywhere in between.

For any questions, feedback, comments or inquiries, please email me, and I will get back to you as soon as possible.

Any and all feedback is appreciated, and emails and comments will be answered within a reasonable time frame. Due to a high amount of spam all comments are moderated before publication; however, criticism or dissenting opinions will be published, so long as it is not offensive or otherwise against good taste.

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The Author

Jani Ihalainen (LL.B. (Hons), LL.M.), is a law graduate with a passion for all that is intellectual property law, residing in London, UK.
He also currently works for an international law firm in the City of London.

Protected Geographical Indicators (or PGIs for short) are a crucial part of being able to identify local goods that have a particular qualit...

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Any and all content on this web blog should not be construed as legal advice, but merely a discussion of facts, legislation, cases or current developments within intellectual property law. All opinions are purely of the respective author of each piece and do not relate to any actual, potential or third-party affiliations.

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